WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Davivienda S.A. v. Simon Lundgren, Domain Park Ltd.
Case No. DCO2014-0029
1. The Parties
The Complainant is Banco Davivienda S.A. of Bogotá, Colombia, represented by Posse Herrera Ruiz, Colombia.
The Respondent is Simon Lundgren, Domain Park Ltd. of Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <bancodavivienda.com.co> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3 and 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 24, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 29, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Banco Davivienda S.A., a financial entity offering bank services since 1972 in Colombia.
The Complainant is the owner of the trademark DAVIVIENDA registered to covers financial services in Colombia. The Complainant has also registered its trademark in the United States of America, Brazil, Ecuador, Costa Rica and Chile.
The Complainant also operates a website located at "www.davivienda.com" since the year 1996.
The disputed domain name was registered on April 22, 2011.
5. Parties' Contentions
The disputed domain name is confusingly similar with the DAVIVIENDA trademark. Additionally, the Complainant claims that the word "banco" added before the word "davivienda" means bank in Spanish and the Complainant is a bank.
As evidence of the lack of legitimate interests and rights of the Respondent respect of the disputed domain name, the Complainant mentioned the following facts:
- The Complainant sent letters to the Respondent in order to get an answer regarding the situation of the disputed domain name, and the Complainant has not received answers to those letters from the Respondent.
- The Respondent hired a service in order to hide its identity.
- Considering that the Complainant is located in Colombia, which is an officially Spanish speaking country, it is obvious that the holder of disputed domain name does not have a legitimate interest in a domain name which has a meaning in Spanish, insofar as it is from Germany and, presumably, it does not speak Spanish.
The Respondent has no legitimate interest in the disputed domain name. Proof of this statement is that the Respondent is not recognized as a person who offers financial services and products. In addition, the Respondent has not shown in any way its intention to use the disputed domain name in a correct way to avoid confusing the Complainant's clients.
The Respondent registered and has been using the disputed domain name in bad faith. The Complainant based the above conclusion in the following facts:
- As a bank legally constituted under the laws of the Republic of Colombia, the Complainant, has been offering financial services since 1972.
- Notwithstanding the foregoing, the Respondent offers the same services in its website with the purpose of capturing visits from potential customers of the Complainant who accidentally add the word "banco" when typing the disputed domain name.
- Since 1996, the Complainant has been using the domain name <davivienda.com> as its website where clients may find information about financial products and services. Despite the knowledge of this fact, the Respondent registered the disputed domain name in the year 2011. The disputed domain name is confusingly similar with several DAVIVIENDA trademarks including DAVIVIENDA word trademark in class 36 which covers financial services.
The Complainant concludes that the Respondent acts may be considered as a behavior which confuses the general public and clients of the Complainant insofar as the only difference between the legitimate website and the disputed domain name is the word "banco".
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the trademark DAVIVIENDA by virtue of its trademark registrations.
The Panel further finds that the disputed domain name <bancodavivienda.com.co> is confusingly similar with the Complainant's registered trademark DAVIVIENDA. The disputed domain name contains all the elements of the Complainant's trademark DAVIVIENDA with the addition of the term "banco" which means "bank" in Spanish. Since the Complainant is a bank, this means that the disputed domain name may cause confusion to Internet users.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The disputed domain name <bancodavivienda.com.co> was registered in April 22, 2011 nearly 40 years after the Complainant began using its DAVIVIENDA trademark. According to the case record, the Respondent has never been known by the Complainant's trademark.
The Respondent was never licensed or authorized to use the DAVIVIENDA trademark in the disputed domain name.
The Respondent has not filed a response, and accordingly there is no basis to find that any rights or legitimate interests are held by the Respondent in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence to support a finding that its DAVIVIENDA trademark has a well-established reputation in its financial field in Colombia.
The Panel finds that the Respondent must have been aware of the Complainant's rights in the trademark DAVIVIENDA when it registered the disputed domain name.
First, the disputed domain name is formed by the term "banco" (which means "bank" in Spanish) and the Complainant's trademark DAVIVIENDA. In addition, Complainant's tradename is also BANCO DAVIVIENDA. Since the Complainant is a bank, the Respondent must have been aware of the Complainant's trademark and its activities when it registered the disputed domain name containing both the terms "banco" and "davivienda".
Second, the Complainant's commercial activity takes place in Colombia and the Respondent registered the disputed domain name in the ".co" the country code Top-Level Domain name (ccTLD) of the Complainant's jurisdiction.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
Furthermore, the Panel finds that the Respondent's use of the disputed domain name in association with a website that contains advertising with links to the Complainant's competitors is used in bad faith.
The website connected to the disputed domain name displays sponsored links to, inter alia, financial services in competition with the Complainant's trademarks. The Panel considers that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website (paragraph 4(b)(iv) of the Policy).
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bancodavivienda.com.co> be transferred to the Complainant.
Pablo A. Palazzi
Date: January 12, 2015